2. 2
What is a trade mark?
A trade mark (popularly known as brand name) in layman's language is a
visual symbol which may be a word, signature, name, device, label,
numerals or combination of colours used by one undertaking on goods
or services or other articles of commerce to distinguish it from other
similar goods or services originating from a different undertaking
The legal requirements to register a trade mark under the Act are:
The selected mark should be capable of being represented graphically
(i.e in the paper form)
It should be capable of distinguishing the goods or services of one
undertaking from those of others
It should be used or proposed to be used mark in relation to goods or
services for the purpose of indicating or so as to indicate a connection
in the course of trade between the goods or services and some person
have the right to use the mark with or without identity of that person
3. 3
How to select a trade mark?
If it is a word it should be easy to speak, spell and
remember
The best trade marks are invented words or coined
words
Please avoid selection of a geographical name. No one
can have monopoly right on it
Avoid adopting laudatory word or words that describe the
quality of goods (i.e. best, perfect, super etc)
It is advisable to conduct a market survey to ascertain if
same/similar mark is used in market
4. 4
What is the function of a trade mark?
Identifies the goods / or services and its origin
Guarantees its unchanged quality
Advertises the goods/services
Creates an image for the goods/ services
Under modern business condition a trade mark
performs four functions:
5. 5
Who can apply for a trade mark and how ?
Any person claiming to be the proprietor of a trade
mark used or proposed to be used by him may apply
in writing in prescribed manner for registration. The
application should contain the trade mark, the
goods/services, name and address of applicant and
agent (if any) with power of attorney , period of use of
the mark and signature. The application should be in
English or Hindi. It should be filed at the appropriate
office
6. 6
How to apply for a trade mark in respect of
particular goods or services?
It is provided under the Trade Marks Act,1999 that goods
and services are classified according to the International
Classification of goods and services. Currently schedule
IV of the Act provides a summary of list of such goods
and services falling in different classes which is merely
indicative. The Registrar is the final authority in the
determination of the class in which particular goods or
services fall. The Schedule IV of the Act indicates
different classes of trade marks
7. 7
What are different types of trade marks available
for adoption?
Any name (including personal or surname of the
applicant or predecessor in business or the signature
of the person), which is not unusual for trade to adopt
as a mark
An invented word or any arbitrary dictionary word or
words, not being directly descriptive of the character or
quality of the goods/service
Letters or numerals or any combination thereof
The right to proprietorship of a trade mark may be
acquired by either registration under the Act or by use
in relation to particular goods or service
8. 8
Devices, including fancy devices or symbols
Monograms
Combination of colors or even a single color in
combination with a word or device
Shape of goods or their packaging
Marks constituting a 3- dimensional sign
Sound marks when represented in conventional
notation or described in words by being graphically
represented
9. 9
What purpose the trade mark system serves ?
Identifies the actual physical origin of goods and
services. The brand itself is the seal of authenticity
Guarantees the identity of the origin of goods and
services
Stimulates further purchase
Serves as a badge of loyalty and affiliation
Enable consumer to make a life style or fashion
statement
10. 10
Who benefits from a trade mark?
Regd.Proprietor: Regd.Proprietor of a trade mark can
stop other traders from unlawfully using his trade mark,
sue for damages and secure destruction of infringing
goods and or labels
Legal professionals: The Trade Marks Registration
system is driven by professionals and legal and para legal
advisors (Agents) who act for the clients in the processing
of the trade marks application
Purchaser and ultimately Consumers getting benefit of
trade marks for goods and services
11. 11
What are the benefits of registering a trade mark?
The registration of a trade mark confers upon the owner
the exclusive right to the use of the registered trade
mark and indicate so by using the symbol (R) in relation
to the goods or services in respect of which the mark is
registered and seek the relief of infringement in
appropriate courts in the country. The exclusive right is
however subject to any conditions entered on the
register such as limitation of area of use etc. Also,
where two or more persons have registered identical or
nearly similar mark due to special circumstances such
exclusive right does not operate against each other
12. 12
What are the formalities and government fees for
major trade mark transaction ?
Filing new applications there are prescribed forms
depending on the nature of application such as Form TM-1,
TM-2, TM-3, TM-8, TM-51 etc.
Fees: Rs.2,500/-
Filing a Notice of Opposition to oppose an application
published in the Trade Marks Journal (FormTM-5)
Fees:Rs.2,500/-
Renewal of a Regd. trade mark (Form TM-12 )
Fees: Rs.5,000/-
Surcharge for belated renewal (Form -10)
Fees:Rs.3,000/-
13. 13
Restoration of removed mark (Form TM-13) Fees:5,000/-
Application for rectification of a registered trade mark
(Form TM-26) Fees:Rs.3,000/-
Legal Certificate (Form TM-46)
Providing details of entries in the Register Fees:Rs.500/-
Official search request (Form TM-54) Fees:Rs.500/-
Preliminary advise of the Registrar as to the registrability of a
mark (Form TM-55) Fees: Rs.500/-
Copyright search request & issuance of certificate (Form TM-60)
Fees: Rs.5,000/-
14. 14
What are the sources of trade mark laws?
(1) The national statue i.e., the Trade Marks Act,1999
and rules thereunder
(2) International multilateral convention
(3) National bilateral treaty
(4) Regional treaty
(5) Decision of the courts
(6) Office practice and rulings
(7) Decision of Intellectual Property Appellate Board
(8) Text books written by academician and professional
experts
15. 15
What does the Register of trade mark contain ?
The register of trade mark currently maintained in
electronic form contains interalia the trade mark the
class and goods/ services in respect of which it is
registered including particulars affecting the scope of
registration of rights conferred; the address of the
proprietors; particulars of trade or other description of
the proprietor; the convention application date (if
applicable); where a trade mark has been registered
with the consent of proprietor of an earlier mark or
earlier rights
16. 16
Can any correction be made in the application
or register?
Yes. The basic principle is that the trade mark applied
for should not be substantially altered affecting its
identity. Subject to this changes are permissible
according to rules detailed in the subordinate legislation
Can a registered trade mark be removed from
the register?
Yes. It can be removed on application to the Registrar on
prescribed form on the ground that the mark is wrongly
remaining on the register. The Registrar also can suo moto
issue Notice for removal of a registered trade mark
17. 17
J
U
R
I
S
D
I
C
T
I
O
N
Mumbai Trade mark Registry
Ahmedabad Trade mark Registry
Chennai Trade mark Registry
Kolkata Trade mark Registry
Delhi Trade mark Registry
Maharashtra,
Madhya Pradesh &
Goa
Gujarat, Rajasthan &
the Union Territories of
Daman, Diu, Dadra &
Nagar Haveli
Andhra Pradesh, Kerala,
Tamil Nadu, Karnataka,
Pandichery &
Lakshadweep
Arunachal Pradesh,
Assam, Bihar, orissa,
West Bengal, Manipur,
Mizoram, Meghalaya,
Sikkim, Tripura,
Nagaland, Andaman &
Nikobor
Jammu & Kashmir,
Punjab, Haryana, U.P.,
Himachal Pradesh,
Delhi & Chandigarh
18. 18
What is a trade mark?
The legal requirements to register a trade mark under the Act are:
The selected mark should be capable of being represented graphically
(i.e in the paper form)
It should be capable of distinguishing the goods or services of one undertaking
from those of others
It should be used or proposed to be used mark in relation to goods or services
for the purpose of indicating or so as to indicate a connection in the course of
trade between the goods or services and some person have the right to use
the mark with or without identity of that person
A trade mark (popularly known as brand name) in layman's language is a
visual symbol which may be a word signature, name, device, label,
numerals or combination of colours used by one undertaking on goods or
services or other articles of commerce to distinguish it from other similar
goods or services originating from a different undertaking
19. 19
TRADEMARKS
(Governed By The Trade Marks Act,1999)
• A trade mark is any sign which can distinguish the goods of one
trader from those of another. Sign includes, words, logos,
pictures, or a combination of these.
• A trade mark is used as a marketing tool so that customers can
recognize the product of a particular trader.
• To register a trade mark , the mark must be:-
distinctive, and, not deceptive, or contrary to law or morality,
and, not identical or similar to any earlier marks for the same or
similar goods.
SONY
OLYMPUS
21. 21
JAPANESE PATENT OFFICE REPORT
- + 6.2 TRILLION YEN
- +6.2 TRILLION YEN
- +3.1 TRILLION YEN
- +1.9 TRILLION YEN
SOME OTHER WELL KNOW MARKS
24 HR CHANNEL; PACKAGE DELIVERY
COMPUTERS-
22. 22
TRADEMARKS
• India affords full protection to trade marks under the
Trade Marks and Merchandise Act. The Indian law of
trademarks is protected by the Trade & Merchandise
Marks Act, 1958. A new statute i.e. the Trade Mark Act,
1999 has been enacted in India to bring it in conformity
with the TRIPs Agreement, to which India is a signatory.
Indian Trademarks Act, 1999, came into force on
September 15, 2003.
• India has made a step towards fulfilling its international
obligations. Consequently, the Indian trademark law has
now become fully compatible with the International
standards laid down in the TRIPs Agreement. The New
Act primarily consolidates and amends the old Trade &
Merchandise Marks Act, 1958 and provides for better
protection of goods and services
23. 23
TECHNICAL ADVANCEMENT BY WAY OF
A NEW PRODUCT OR A NEW PROCESS
NOT LIMITED TO OUTER VISUAL APPEAL
KEEP IT SECRET DISCLOSE TO OTHERS
25. 25
A typical example is Coca-Cola. This soft drink
was invented in 1886 and was never protected
by a patent, only by a trademark (for the name
Coca-Cola) and by an industrial design (for this
very special design of the Coca-Cola bottle,
supposed to be in the shape of a woman wearing
a long skin-tight dress).
The process of the Coca-Cola drink is secret and
is only known by two persons in the world. They
are not allowed to travel together, so that there is
no chance of them dying at the same time in an
accident. The secret of the Coca-Cola process
was well kept during all these years, and nobody
is able to produce a drink with exactly the same
taste still today. You all know that Pepsi Cola, its
biggest competitor, has a different taste.
27. 27
CD PLAYER
Industrial
design
protection for
3D shape
Brand name-
registered under
trademark
Music played
on the CD
player is
protected by
copyright
Various
technical parts
& mechanisms
are subject
mater of
protection
under Patents
28. 28
DIFFERENTIATES YOUR PRODUCTS
AND SERVICES FROM OTHERS
PROMOTES YOUR PRODUCTS AND
SERVICES AND CREATES A
LOYAL CLIENTELE
DIVERSIFIES YOUR MARKET
STRATEGIES TO VARIOUS
TARGET GROUPS
POPULAIZES YOU IN FOREIGN
COUNTRIES
KEEPS AWAY YOUR
COMPETITORS/COPIERS
